Top 5 Mistakes Brand Owners Make When Filing Their Own Trademark Applications

Guest post written by Stacy J Grossman, lawyer, businesswoman, and REach Mentor. Stacy was formerly Vice President and Associate General Counsel at News Corporation, providing counsel to the New York Post, HarperCollins, Amplify Education, News America Marketing, The Daily, Sky Italia and other businesses.

Entrepreneurs often choose not to spend money on legal fees as they are launching their businesses. Understandably, budgets are tight in a company’s early days, and when faced with the choice of spending money on a trademark lawyer or on product development, product development usually (and with good reason) wins. This results in many individuals and businesses applying to register trademarks with the United States Patent and Trademark Office without first seeking legal advice. While this can be successful and without incident, entrepreneurs quite frequently make mistakes when managing the trademark application and maintenance process on their own. This article looks at what are probably the top five mistakes in my experience, and some ways to avoid them.

1. Not Conducting Proper Clearance

When selecting a brand, the very first step is to ensure that the brand is “clear” for use and registration. If a brand owner selects the name IGUANA for her new social media app, she must make sure that no third party is using the same or a confusingly similar name for the same or related services. If she fails to clear the mark, then the time and money she spent establishing the name as a brand would be wasted if she later discovers that she has to rebrand because the chosen name is already in use. Scarier, using a brand that is owned by a third party could expose her to liability for trademark infringement.

2. Making Technical Errors in the Application

While the fields to be filled out in a trademark application may seem straightforward, people inexperienced with the forms make frequent, and sometimes fatal, mistakes. These mistakes could result in the application being refused altogether, or in having to respond to an Office Action (see #3 below). Mistakes include: (i) not understanding the level of “use” required to support a use-based application; (ii) not understanding when to apply based on “intent-to-use”; (iii) applying to register the trademark in the wrong class; (iv) filing an improper specimen; (v) not understanding whether a mark is registerable as a trademark; and (vi) not developing an appropriate description of goods or services.

3. Not Responding to Office Actions

Once an application is filed, it takes approximately 3-4 months before it is reviewed by an attorney in the Patent and Trademark Office. If the application is perfect, it will be published for opposition. If it is unopposed, it will then be approved for registration.

If, however, there is an issue with the application -- whether great or small -- the Examining Attorney will issue an Office Action, which requires a response. Failing to submit a timely response will result in the application being deemed abandoned. Sometimes, the issue raised in an office action will be minor: the Examining Attorney might require that a descriptive word be disclaimed, or that the goods or services described in the application be amended to be more specific. Sometimes, though, the issue will be major and require a substantive legal response. An example of this would be if the Examining Attorney believed that the applied-for trademark was confusingly similar with an existing registration or an earlier-filed application. This sort of Office Action can be challenging for a non-lawyer to deal with: perhaps a legal argument can convince the Examining Attorney that there is no likelihood of confusion, or perhaps the trademark applicant can seek a co-existence agreement with the owner of the earlier registration.

No matter how big the issue, and no matter what strategy is pursued, a response must be submitted within six months of the mailing date of the Office Action to prevent the application from being abandoned. Entrepreneurs who file applications on their own often do not monitor their applications, and then lose their investment in and priority date of their applications.

4. Not Maintaining the Application or Registration

A trademark registration only lasts for as long as the trademark is in use, and trademark owners have to comply with periodic filing requirements to maintain their marks. A statement of use is due between the 5th and 6th year following registration, and again on the 10th anniversary and every subsequent 10th anniversary of the registration date. Failing to pay a fee and file the requisite notice within prescribed deadlines will result in a registered trademark being abandoned.

If a trademark application is filed on an intent-to-use basis and a notice of allowance is issued, then the trademark owner must request extensions of time to file a statement of use every six months in order to maintain the application. Failing to file an extension request (or a statement of use) will result in the trademark application being abandoned.

5. Not Monitoring Third Party Use

Once a trademark is registered, its owner should monitor its use. The purpose of a trademark is to indicate a single source of goods or services offered under a brand, and thereby prevent consumer confusion. If a trademark owner does not police her mark to ensure that third parties don’t use the same or a confusingly similar trademark, then the brand will become diluted. In rare (but important and very real) cases, trademarks that were not properly policed became so diluted that they became the generic term for a product. This was the fate of the former brands ASPIRIN, THERMOS, ESCALATOR and LAUNDROMAT.

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It is certainly possible for entrepreneurs to file applications and successfully register trademarks on their own. If this is the route you choose, then it is well worth your time to familiarize yourself with the application process in order to decrease the chance of a costly problem.